Therabody Inc v. Hyperice IP Subco LLC

1. Case Identification

• Case #: PGR2025-00013
• Patent #: 11,938,082
• Filed: December 23, 2024
• Petitioner(s): Therabody, Inc.
• Patent Owner(s): Hyperice IP Subco, LLC
• Challenged Claims: 1-18

2. Patent Overview

• Title: Massage Device Having Variable Stroke Length
• Brief Description: The ’082 patent relates to a percussive massage device. The challenged claims are directed to a "quick-connect system" that allows a massaging head to be inserted into or removed from a bore in a reciprocating piston while the device is in operation.

3. Grounds for Unpatentability

Ground 1A: Lack of Written Description - Claims 1-18 are Unpatentable under 35 U.S.C. § 112

• Core Argument for this Ground:
  • Petitioner argued that the claims are unpatentable for lacking written description support. The claims broadly recite a functional limitation for a "quick-connect system" configured to allow head removal while the piston reciprocates. However, the specification discloses only a single working example: a system using corresponding magnets in the massaging head's shaft and the piston's bore. Petitioner contended this narrow disclosure of a single species (a magnetic system) does not support the broad functional genus claimed, as it fails to reasonably convey to a person of ordinary skill in the art (POSITA) that the inventor possessed the full scope of the claimed invention. The petition also asserted specific written description failures for dependent claims 13 ("substantially cylindrical bore") and 17 (a pocket in the massaging head to receive the piston), arguing the specification describes the opposite or fails to disclose these features entirely.

Ground 2: Obviousness over Mabuchi and Colloca - Claims 1, 7, 9-11, 13, and 18 are obvious over Mabuchi in view of Colloca

• Prior Art Relied Upon: Mabuchi (Patent 4,513,737) and Colloca (Application # 2007/0150004).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Mabuchi taught a "beauty treatment device" (a type of percussive massager) with a housing, a motor, a reciprocating piston (actuator), a drive mechanism, and interchangeable heads ("patter assembly"). Critically, Mabuchi disclosed a quick-connect mechanism using magnets to secure the head to the piston, allowing for easy interchangeability without specific alignment. Petitioner argued that Colloca, which described a chiropractic adjusting instrument, remedied any potential deficiency in Mabuchi by teaching a reciprocating plunger with a bore at its distal end for receiving interchangeable impact heads. The combination of Mabuchi's magnetic quick-connect massager with Colloca's teaching of a piston bore allegedly rendered the limitations of independent claims 1 and 18 obvious.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references to improve upon Mabuchi's design. Both references related to percussive devices with interchangeable heads used on the human body. A POSITA seeking to implement the interchangeability taught in Mabuchi would have looked to known connector designs like the piston bore in Colloca as a simple and compatible way to receive the shank of a massaging head.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because the references taught compatible systems, and implementing a bore in Mabuchi's piston would be a straightforward mechanical design choice with predictable results.

Ground 3: Obviousness over Pivaroff and Clark - Claims 1, 7, 9-11, 13, and 18 are obvious over Pivaroff in view of Clark

• Prior Art Relied Upon: Pivaroff (Patent 6,682,496) and Clark (Patent 3,007,504).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Pivaroff, which the Examiner considered during prosecution, disclosed a deep muscle percussive massager that taught nearly all limitations of claim 1, including a motor, reciprocating rod (piston), and a drive mechanism. However, Pivaroff taught attaching the massage head via screw threads, which is not a "quick-connect" system allowing for exchange during operation. Clark taught a magnetic tool holder for easily and quickly exchanging a "multiplicity of different types of screws or the like." Petitioner contended that it would have been obvious to a POSITA to replace Pivaroff's inconvenient threaded connection with the well-known magnetic quick-connect system from Clark to improve its usability.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Pivaroff and Clark to improve the ease and speed of changing massaging heads on Pivaroff's device. The motivation was to replace an inferior, slow connection method (threads) with a superior, known quick-connect method (magnets) from an analogous field of interchangeable mechanical tools.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success, as applying a magnetic connection from Clark to Pivaroff's device was a simple substitution of one known fastening mechanism for another with predictable operational advantages.

• Additional Grounds: Petitioner asserted that claims 13-16 are indefinite under §112 for failing to provide a standard for "substantially cylindrical." Petitioner also asserted additional obviousness challenges (Grounds 4 and 6) by adding Harris (Patent 6,432,072) to the Mabuchi/Colloca and Pivaroff/Clark combinations, respectively, to teach dependent claims 2-4 related to multi-speed operation, an external control panel, and visual indicators.

4. Key Claim Construction Positions

• Petitioner identified two terms with competing constructions from a related district court litigation but argued that the claims are invalid under either party's proposed construction.
  • "quick-connect system is configured to have...": Patent Owner proposed this means the system allows for head removal during operation. Petitioner countered that the term requires structures that are specially designed and adapted for this purpose, not merely capable of it. This distinction is central to whether the prior art teaches the limitation.
  • "substantially cylindrical bore": Patent Owner proposed this means "at least a portion of the bore is substantially cylindrical." Petitioner argued for a narrower construction or, alternatively, that the term is indefinite.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d). The petition contended that the §112 invalidity grounds (written description and indefiniteness) were never considered by the Examiner during prosecution. Furthermore, Petitioner argued that while some prior art was of record, the key references that teach the "quick-connect system" limitation—Mabuchi and Clark—were never substantively reviewed by the Examiner. The Examiner allegedly erred by analyzing references like Pivaroff in isolation and failing to consider how they could be modified by other art, such as Clark, to arrive at the claimed invention.

6. Relief Requested

• Petitioner requests institution of post-grant review (PGR) and cancellation of claims 1-18 of the ’082 patent as unpatentable.